First to File? First to Use? It’s Not the Same Everywhere! Thoughts on Trademark Strategy for Global Companies:

Trademarks are our jam at OG+S. This post is a short one about trademark strategy and what to think about if your brand has a global reach.

First to Use:

In the United States, we have a “first to use” system when it comes to trademarks. What that means is that the Company who uses their trademark first has “first dibs” and can stop someone else, who used the trademark at a later date (i.e. second), from doing so. Now, of course, the applicability of that rule is more nuanced in practice – but those are the basics. Essentially, the “first to use” system allows U.S. companies the benefit of using a trademark without having to register it immediately with the USPTO.

Now, getting back to reality for a second – is it a pain in the butt if someone else files your trademark first with the USPTO, even if you were the first one using it? Of course! But, the fact is, at least you have the ability to get your trademark rights back as the rightful first user.

First to File:

In other jurisdictions, like China (for example), there is a “first to file” system. What that means is, regardless of who uses a trademark first, it’s the Company who files the trademark with China’s USPTO equivalent first who gets “first dibs” on use of the trademark. Big difference! Are there nuances here too? Of course, but the basics apply! (Note here: that China recently changed their trademark law to reduce “trademark squatting” [companies that register famous brands and hold them hostage when those companies come to China and attempt to sell their wares], but that’s a problem in most first to file jurisdictions.)

What Does this Mean for Global Companies?:

Owners of U.S. companies (and trademarks!) who plan to expand globally should be aware of which jurisdictions are first to file vs. first to use – at a minimum. If international expansion is already a foregone conclusion, though, U.S. companies should take advantage of the Madrid Protocol and parlay their USPTO applications into international registrations after they complete registration here. The process is pretty easy, the fees are a little high, but if you’re faced with wrestling your brand away from someone else when you’re on the cusp of expanding into an international market for the first time, it’s a drop in the bucket!

If you have questions about your international trademark strategy, OG+S can help!

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